Boston Technologies, Inc. v. Derek Snedden
Claim Number: FA1304001494570
Complainant is Boston Technologies, Inc. (“Complainant”), represented by Joel G. Kinney of Fort Point Legal, Massachusetts, USA. Respondent is Derek Snedden (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bostontechnologies.us>, registered with PDR LTD. D/B/A PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 12, 2013; the National Arbitration Forum received a hard copy of the Complaint on April 12, 2013.
On Apr 16, 2013, PDR LTD. D/B/A PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <bostontechnologies.us> domain name is registered with PDR LTD. D/B/A PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR LTD. D/B/A PublicDomainRegistry.com has verified that Respondent is bound by the PDR LTD. D/B/A PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bostontechnologies.us. Also on April 18, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usDRP Policy, usDRP Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
· Complainant has continuously operated its financial services technology business under the BOSTON TECHNOLOGIES name since 2008. Complainant has articles of organization and certification as a foreign corporation authorized to do business in Massachusetts. Complainant has registered the <bostontechnologies.com> domain name, and has held control of the domain name since July 27, 2003.
· Respondent’s domain name features the entire BOSTON TECHNOLOGIES mark and merely adds the “.us” top level domain (“usTLD”) to the mark. Such a variation in no way distinguishes the <bostontechnologies.us> domain name from the mark.
· Respondent has never conducted business under the BOSTON TECHNOLOGIES name.
· Respondent has no other rights, licenses, or permission to use Complainant’s common law rights freely in the registration of domain names.
· Respondent’s sole purpose for using this domain name is to scandalize and interfere with Complainant’s business dealings.
· Respondent’s own purpose for using the <bostontechnologies.us> domain name is to besmirch Complainant’s reputation and interfere with Complainant’s legitimate business. Complainant has no desire to use this proceeding to attack Respondent’s freedom of expression, but merely to show that Respondent’s actions evince bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BOSTON TECHNOLOGIES mark. Respondent’s domain name is confusingly similar to Complainant’s BOSTON TECHNOLOGIES mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <bostontechnologies.us> domain name, and that Respondent registered and uses the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
The record indicates that Complainant has initiated a state court civil action against all parties allegedly responsible for this disputed domain name in the Suffolk County Superior Court, in Boston, Massachusetts. According to Complainant, the action involves Complainant’s state law claims for alleged breach of contract and common law defamation. Despite the pendency of the litigation, the Panel concludes that the present dispute is suitable for resolution under the UDRP. See eProperty Direct LLC v. Miller, FA 836419 (Nat. Arb. Forum Jan. 3, 2007) (holding that the panel could decide the dispute under Rule 18(a) of the [UDRP] “since the legal proceedings referred to by the parties appear to be concluded and Orders made. Moreover . . . those Orders do not touch directly on the disposition of the disputed domain name or on the parties’ intellectual property rights.”); see also Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (choosing to proceed under the UDRP despite concurrent court proceedings for multiple reasons, including that the proceedings appeared to be filed in a court that did not commonly adjudicate intellectual property issues and that the court proceedings were filed by the respondent on the same day the response in these proceedings was filed).
Complainant argues that it has continuously operated its financial services technology business under the BOSTON TECHNOLOGIES name since 2008. Complainant notes that it has articles of organization and certification as a foreign corporation authorized to do business in Massachusetts. Complainant notes that it has registered the <bostontechnologies.com> domain name, and has held control of the domain name since July 27, 2003. The Complainant has also provided several articles showing that Complainant has been subject to accolades and press reports. The Complainant has satisfactorily shown that it has used the BOSTON TECHNOLOGIES mark continuously in its business since at least 2008. In light of Respondent’s failure to respond to the Complaint, Complainant has made a minimally sufficient showing that it has established common law rights in the BOSTON TECHNOLOGIES mark. See Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark); Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (“A common law trademark must be shown by evidence such as sales figures, advertising expenditure, [and] numbers of customers.”).
Complainant also argues that Respondent’s domain name features the entire BOSTON TECHNOLOGIES mark and merely adds the usTLD to the mark. Complainant argues that such a variation in no way distinguishes the <bostontechnologies.us> domain name from the mark. The Panel agrees that the domain name is identical to the BOSTON TECHNOLOGIES mark under Policy ¶ 4(a)(i) when Respondent merely adds the usTLD and removes the mark’s spacing. See Basic Trademark S.A. v. Antares S.p.A, FA 1130680 (Nat. Arb. Forum Mar. 4, 2008) (“The <robedikappa.us> domain name is identical to the ROBE DI KAPPA mark. The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has never conducted business under the BOSTON TECHNOLOGIES name. The WHOIS information lists “Derek Snedden” as the domain name’s registrant. When there is no evidence in the record, including the WHOIS information, to show a connection between Respondent and the <bostontechnologies.us> domain name, it may be concluded that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant further argues that Respondent has no other rights, licenses, or permission to use Complainant’s common law rights freely in the registration of the domain name. The Panel agrees that when Complainant denies that Respondent has any permission to use its own mark, and Respondent has provided no information to show it has rights in any BOSTONTECHNOLOGIES.US mark, the Respondent has no rights in such a mark under Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant argues that Respondent’s sole purpose for using this domain name is to scandalize and interfere with Complainant’s business dealings. The <bostontechnologies.us> domain name resolves to a website that features extensive and bold accusations about Complainant and its employees, ranging from notices of SEC and securities fraud investigations to Respondent alleging that one of Complainant’s employee’s has previously been subject to rape charges. Although Respondent does have constitutional speech protections, the First Amendment does not enable Respondent to register a domain name that is identical to Complainant’s mark. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that the respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant . . . is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s own purpose for using the <bostontechnologies.us> domain name is to besmirch Complainant’s reputation and interfere with Complainant’s legitimate business. There is no constitutional protection for Respondent to infringe on another party’s intellectual property rights by registering a domain name that is identical to Complainant’s mark in order to criticize Complainant. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith). Accordingly, the Panel finds that Respondent has registered and used the <bostontechnologies.us> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bostontechnologies.us> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 29, 2013
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